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BlueScope Steel Limited (BlueScope) filed a UDRP complaint against the disputed domain names on 16 May 2016 claiming that it had extensive rights, both registered and common law, in the COLORBOND trade mark.

In order for its complaint to succeed, BlueScope had to establish all the elements required by paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the Policy), namely that:

the disputed domain names are identical or confusingly similar to a trade mark or service mark in which BlueScope has rights;

the respondents have no rights or legitimate interests in respect of the disputed domain names; and

the disputed domain names have been registered AND are being used in bad faith.

BlueScope had no difficulty in establishing the first requirement and was able to show that it is the registered proprietor of four Australian trade mark registrations for the trade mark COLORBOND including three registrations in class 6, (the first of which dates back to 1977) and a defensive mark covering various classes which was registered in 2005. In addition to its registered rights, BlueScope provided evidence that it had been using the COLORBOND trade mark extensively since 1966 in relation to the manufacture and sale of steel and steel products including that it had produced approximately 6 million tonnes of its COLORBOND product and had generated sales in excess if AU$2.5 billion.

Despite the respondents’ arguments that the word COLORBOND is generic, the Panel found that BlueScope had proven ownership of a valid registered trade mark, and that both disputed domain names were confusingly similar to BlueScope’s registered trade marks.

The Panel then considered the third requirement which is that the disputed domain names had been registered and used in bad faith by the respondents. In this case, however, this proved more complicated because of the long relationship between the parties which started out really well and dated back to 1984 when the respondents first started using Bluescope’s COLORBOND product. The respondents purchased COLORBOND products from 1984 to 2008 and BlueScope publicly (on its website and by way of a plaque) acknowledged the significant purchases made by the second respondent during this time and the “valuable contribution” this had made to the growth of its business. The disputed domain names were registered during this time in 1999 and 2002, although the respondents seem to have argued that both domain names were registered in 1999.

Due to various circumstances, the relationship between the parties then gradually deteriorated culminating in litigation in 2011.

It was accepted by the Panel that the respondents had been aware of BlueScope’s trade mark for at least 14 years, at the time the contested domain names were registered. Furthermore, the respondents’ use of the disputed domain names to redirect traffic to their website would amount to use in bad faith. However, the findings in this dispute all hinged on the respondents’ motives at the time that the disputed domain names were registered in 1999 and 2002. Turning back the clock, the Panel carefully examined the circumstances surrounding the registration of the domain names and came to the conclusion that it did not appear that the respondents had registered the disputed domain names in 1999 or 2002 to divert customers from BlueScope or otherwise to misappropriate BlueScope’s goodwill, “but rather to promote the fact that it was at that time selling products using genuine COLORBOND metal sheeting”.

On the facts presented to it, the Panel correctly found that BlueScope had not discharged the onus on it to establish that the disputed domain names had been registered in bad faith. It remains to be seen whether BlueScope will pursue this dispute in a different forum.

The lesson to be learned from this decision is that relationships often change over time and although a domain name may not have been registered in bad faith, the subsequent use of the domain name can be in bad faith. Brand owners should therefore be vigilant about allowing or authorising third parties to register domain names containing their brand names. Brand owners should also take precautions to register not only their brand names as domain names but also other variations of their brands.

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